Hussein Akhavannik

Partner

Washington, D.C.
T +1.202.861.1642
F +1.202.861.1783

"Hussein thinks outside the box and adapts his team well in light of changing client demands. He runs prosecution efficiently while also doing really high-quality work."

— IAM Patent 1000 2020

Overview

Hussein Akhavannik, co-leader of BakerHostetler’s Life Sciences team, merges his engineering background with insight as a technologist to strengthen his patent prosecution and portfolio management practice. The patent applications he prosecutes in technologies related to the software, electrical, computer, medical and mechanical arts are wide-ranging: From surgical robots and video surveillance, to anti-coagulants and vascular placement devices, Hussein’s diverse work reflects his broad knowledge. It also facilitates a comprehensive approach with clients. His services include managing international patent portfolios, institutionalizing patent programs, optimizing patent portfolios for sale, intellectual property due diligence, and performing freedom-to-operate studies.

Hussein spent almost four years at the U.S. Patent and Trademark Office (USPTO) as a patent examiner, and served as a legal intern for the Patent Trial and Appeal Board and the Office of the Solicitor. His understanding of the inner workings of the USPTO is just one more tool that Hussein leverages to develop creative solutions for clients in a cost-effective manner.

Select Experience

International Portfolio Manager
  • Extracts inventions from engineers within corporations, manages preparation and filing of patent applications, develops international protection strategies, and works with in-house counsel to manage the prosecution of those patents worldwide.
Due Diligence
  • Performs intellectual property due diligence for mergers and acquisitions, and leverages USPTO experience to perform internal searches as part of freedom-to-operate analyses for medical devices, software packages, hardware, pharmaceutical drugs and more. Also drafts invalidity opinions and non-infringement opinions.
Deal Work
  • Optimizes patent portfolios for sale. Identifies patents in various high-tech sectors for companies that want to inorganically build a patent portfolio around a specific industry, negotiates pricing and prepares agreements for patent acquisition.
More »

Experience

International Portfolio Manager
  • Extracts inventions from engineers within corporations, manages preparation and filing of patent applications, develops international protection strategies, and works with in-house counsel to manage the prosecution of those patents worldwide.
  • Developing a patent portfolio for an international manufacturing company covering fluid dispensing, inspection, and medical devices.
  • Developing a patent portfolio for an international pharmaceutical company covering drug delivery systems.
  • Developing several patent portfolios for an international aerospace corporation covering flight systems, including semiconductor chips and flight control algorithms.
  • Developing a patent portfolio for a start-up corporation covering automated parking systems.
Due Diligence
  • Performs intellectual property due diligence for mergers and acquisitions, and leverages USPTO experience to perform internal searches as part of freedom-to-operate analyses for medical devices, software packages, hardware, pharmaceutical drugs and more. Also drafts invalidity opinions and non-infringement opinions.
  • Assisted in the purchase of a large medical device corporation by examining the portfolio of the corporation to identify its strengths and weaknesses. Also, analyzed the intellectual property landscape of the corporation's technology to predict risks for the purchaser and developed strategies to protect against potential future disputes.
Deal Work
  • Optimizes patent portfolios for sale. Identifies patents in various high-tech sectors for companies that want to inorganically build a patent portfolio around a specific industry, negotiates pricing and prepares agreements for patent acquisition.
  • Responsible for $150 million in patent acquisitions.
Day-to-Day Prosecution
  • Ensures that any changes to the patent claims retain protection for clients’ products while securing patents with the USPTO.
Technical Experience

  • Medical Devices: surgical robots, autoinjectors, syringes, pumps, vascular and urological catheters, vascular placement devices, dilators and sheaths, surgical clips and inhalers.
  • Pharmaceuticals: anesthetics, bronchodilators, steroids and anti-coagulants.
  • Industrial Machinery: fluid-dispensing systems, polymer extrusion, soldering systems, and inspection systems.
  • Software: digital health platforms, big data analytics, control systems, closed-loop feedback, algorithms, user tracking and monitoring, video compression and video surveillance.

Recognitions and Memberships

Recognitions

  • IAM Patent 1000: The World's Leading Patent Practitioners
    • DC Metro Area: Recommended for Patent Prosecution (2020)
  • The Legal 500 United States (2019)
    • Recommended in Patent: prosecution (including reexamination and post-grant proceedings)
  • Washington, D.C., Super Lawyers "Rising Star" (2017)

Memberships

  • American Intellectual Property Lawyers Association

Pro Bono

  • Represents juveniles in the United States without parents and develops strategies that allow those clients to remain in the U.S. and obtain Special Immigrant Juvenile status.

Emerging Issues

Prior Positions

  • U.S. Patent and Trademark Office: Patent Examiner
  • USPTO Patent Trial and Appeal Board: Legal Intern
  • USPTO Office of the Solicitor: Legal Intern
  • U.S. International Trade Commission Office of Unfair Important Investigations: Legal Intern

Admissions

  • U.S. Patent and Trademark Office, Registration No. 59,347
  • Virginia
  • District of Columbia

Education

  • J.D., The George Washington University Law School, 2007, with honors
  • M.S., Johns Hopkins University, Electrical and Computer Engineering, 2004
  • B.S., Johns Hopkins University, Biomedical Engineering, Electrical Engineering, 2002, with general and departmental honors

Languages

  • Farsi

Blog

In The Blogs

Previous Next
IP Intelligence: Insight on Intellectual Property
Hussein Akhavannik, Fabian Koenigbauer Article Examines Lessons to Learned from "Pharma Tech" Decision
By Hussein Akhavannik, Fabian M. Koenigbauer
December 20, 2019
Partner Hussein Akhavannik and Counsel Fabian Koenigbauer authored an article published Dec. 19, 2019, by IAM.com. The article, “Federal Circuit Ruling Marks Out Dangers of Doctrine of Equivalents Estoppel,” discusses how the Federal...
Read More ->